`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Date: March 16, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERISTAR PERIMETER SECURITY USA INC., ASSA ABLOY INC.,
`and ASSA ABLOY AB,
`Petitioner,
`
`v.
`
`RSA PROTECTIVE TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`____________
`
`
`
`Before KEN B. BARRETT, JOHN P. PINKERTON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as the “Parties”)
`filed a Joint Motion to Terminate (“Joint Motion”) the above-identified
`proceeding due to settlement. Paper 13. In support of the Joint Motion, the
`Parties filed a Settlement Agreement and Release (“Settlement Agreement”).
`Ex. 1049. The Parties further filed a Joint Request to Treat Settlement
`Agreement as Business Confidential Information (“Joint Request”) pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 14.
`
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding,
`and that the filed copy of the Settlement Agreement is a true and complete
`copy. Joint Motion 1. The Parties further represent that the Settlement
`Agreement resolves all currently pending Patent Office and District Court
`proceedings between the Parties involving the above-referenced patent. See
`id at 4.
`We instituted trial on the above-identified proceeding. Paper 11. We
`have not yet decided the merits of the proceeding, and a final written
`decision has not been entered. Notwithstanding that the proceeding has
`moved beyond the preliminary stage, the Parties have shown adequately that
`
`2
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`termination of the proceeding is appropriate. Under these circumstances, we
`determine that good cause exists to terminate the proceeding with respect to
`the Parties.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`file of the patent involved in this inter partes review proceeding. Paper 14,
`1. After reviewing the Settlement Agreement between Petitioner and Patent
`Owner, we find that the Settlement Agreement contains confidential
`business information of the Parties regarding the terms of settlement.
`Accordingly, we determine that good cause exists to treat the Settlement
`Agreement as business confidential information pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate is granted, and
`IPR2020-01369 is terminated with respect to Petitioner and Patent Owner
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the Joint Request to Treat Settlement
`Agreement as Business Confidential Information is granted, and the
`Settlement Agreement (Exhibit 1049) shall be kept separate from the file of
`U.S. Patent 8,215,865 B2, and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`FOR PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Christopher S. Marchese
`Usman Khan
`FISH & RICHARDSON P.C.
`renner@fr.com
`rozylowicz@fr.com
`marchese@fr.com
`khan@fr.com
`
`
`FOR PATENT OWNER:
`
`Joseph V. Saphia
`Jessica H. Zafonte
`HAUG PARTNERS LLP
`jsaphia@haugpartners.com
`jzafonte@haugpartners.com
`
`
`4
`
`
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